Ex Parte KAMINO et al

Patent Trials and Appeals Board

Jun 27, 2019

15359343 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/359,343 11/22/2016
2292 7590 07/01/2019
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
FIRST NAMED INVENTOR
Kazuya KAMINO
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
3673-0575PUS 1 1582
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUY A KAMINO, KOSUKE TACHIBANA,
and KOHEI MIMURA
Appeal2018-008707
Application 15/359,343
Technology Center 3700
Before BRETT C. MARTIN, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, and 4--12 under 35 U.S.C. § 103(a) as unpatentable
over Nakamura (US 2012/0165132 Al, pub. June 28, 2012) and Isogawa
(US 2013/0324318 Al, pub. Dec. 5, 2013). 2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Dunlop Sports Co. Ltd. is the Applicant and real party in interest. Appeal
Br. 1.
2 Appellants have cancelled claim 3, thereby obviating a rejection thereof by
the Examiner in the Final Action. Final Action 3, Appeal Br. 6.
Appeal2018-008707
Application 15/359,343
THE INVENTION
Appellants' invention relates to golf balls. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A golf ball comprising a core, a mid layer positioned
outside the core, and a cover positioned outside the mid layer,
wherein
the golf ball has a plurality of dimples on a surface thereof,
the dimples include a plurality of small dimples each having
an area of less than 8.0 mm2 and a plurality of large dimples
each having an area of equal to or greater than 8.0 mm2,
a ratio PS of a sum of the areas of the small dimples relative
to a surface area of a phantom sphere of the golf ball is less than
0.020,
a ratio PL of a sum of the areas of the large dimples relative
to the surface area of the phantom sphere is equal to or greater
than 0. 790, and
a degree of uniformity G of the areas (mm2) of the large
dimples is equal to or less than 1.15,
wherein a thickness Tm (mm) and a Shore D hardness
Hm of the mid layer, a thickness Tc (mm) and a Shore D
hardness He of the cover, and an amount of compressive
deformation Sb (mm) of the golf ball meet the following
mathematical formula (2):
((Sb* Tc)/ (He* Hm *Tm))* 1000 > 0.81 (2).
OPINION
Appellants argue claims 1, 2, and 4--12 as a group. Appeal Br. 6-13.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Nakamura teaches the limitations of claim 1
directed to dimples and that Isogawa substantially, but not completely,
teaches the limitations directed to the claimed characteristics of thickness,
hardness, and compressive deformation. Final Act. 3--4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
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Application 15/359,343
art at the time the invention was made to provide Nakamura's ball with the
thickness, hardness, and compressive deformation values taught by Isogawa.
Id. at 4. According to the Examiner, a person of ordinary skill in the art
would have done this as a matter of substituting one known element for
another. Id. The Examiner concedes that the proposed combination does
not literally satisfy the mathematical formula limitation, but relies on
principles of routine optimization in determining that it would have been
obvious to do so. Id. at 4--5 (citing In re Aller, 220 F.2d 454 (CCPA 1955).
Appellants argue that Nakamura and Isogawa disclose "very different
golf balls" such that a person of ordinary skill in the art would not have
combined the teachings of the two references. Appeal Br. 10. Appellant
argues that there are "millions of other options" available to the skilled
practitioner. Id. at 10-11.
Appellants' argument is not persuasive. Skilled practitioners and,
indeed, many lay golfers, understand that a golf ball has: (1) an outer
surface that interacts with aerodynamic forces in flight; and (2) a physical
structure that is subjected to compressive forces when struck by a golf club.
A person of ordinary skill in the art would have no difficulty in combining
an outer surface configuration, such as in Nakamura, with a physical
structure, such as in Isogawa. Indeed, the design of every new golf ball
entails modification of at least one of these two characteristics. Appellants
present neither evidence nor persuasive technical reasoning that combining
Nakamura's surface configuration with Isogawa's physical structure requires
more than ordinary skill.
Appellants' "millions of other options" argument does not persuade us
that the particular option claimed in claim 1 is not obvious. Appellants
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Appeal2018-008707
Application 15/359,343
present neither evidence nor persuasive technical reasoning that the
existence of "millions of other options" is relevant to an obviousness
analysis. 3 Indeed, designing any physical object comprised of physical
components, each with particular shapes, sizes, and materials, invariably
entails differences vis-a-vis many alternative designs. Appellants do not
contend that the Examiner relies on non-analogous and, indeed, there is no
genuine dispute that the Examiner's applied art falls within the scope and
content of the prior art that is imputed to the hypothetical person of ordinary
skill. See Angres, Ltd. v. Tinny Beauty and Figure, Inc., 116 F.3d 1497
(Fed. Cir. 1997) (explaining that knowledge of the prior art is imputed to the
hypothetical person of ordinary skill in the art for an obviousness analysis).
Appellants next argue against the Examiner's routine optimization
finding. Appeal Br. 11. Appellants argue that Isogawa produces a value for
formula (2) of only 0.74, a point that is already conceded by the Examiner.
Appeal Br. 11, Final Action 4. Appellants conclude that: "A person of
ordinary skill in the art would simply not select a hybrid of Nakamura '132
Example 3 and Isogawa '318 Example 34 as a lead product for further
optimization." Appeal Br. 12.
Appellants' challenge to the Examiner's routine optimization position
is unpersuasive as it fails to undertake a proper analysis. It is well settled
that "where the general conditions of a claim are disclosed in the prior art, it
is not inventive to discover the optimum or workable ranges by routine
experimentation." Aller, 220 F.2d at 456; In re Boesch, 617 F.2d 272,276
(CCPA 1980) ("discovery of an optimum value of a result effective variable
3 Appellants do not elaborate on the specific details of each of the "millions"
of other options. See generally Appeal Br. We express no opinion as to
whether any of such options might be patentable.
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Application 15/359,343
... is ordinarily within the skill of the art"). In the instant case, the
Examiner finds, and Appellants do not dispute, that the "general conditions
of the claim" are disclosed in the prior art. Final Action 4. Isogawa
explicitly addresses the issue of "shot feeling." Isogawa, ,r,r 82, 119, 131,
234, 236. Isogawa identifies a number of variables that effect shot feeling,
including: (1) thickness of core and cover materials [i1i1 71, 72, 7 5, 77, 90,
94, 96]; (2) hardness value of materials and distribution thereof [i1i167, 71-
85]; and (3) compressive deformation [,I 82].
If the compression deformation amount is 2.2 mm or more, the
shot feeling of the golf ball becomes better. If the compression
deformation amount is 4.0 mm or less, the resilience of the golf
ball becomes better.
Id. ( emphasis added). Thus, Appellants fail to mount a serious challenge to
the Examiner's finding that claim 1 contains result effective variables that
are susceptible to being optimized by routine experimentation. In view of
the foregoing, the Examiner's finding that the "general conditions of the
claim" are disclosed in the prior art is supported by a preponderance of the
evidence.
Nevertheless, the outcome of optimizing a result-effective variable
may still be patentable if the claimed ranges are "critical" and "produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art. See In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). In the instant case, Appellants argue
that the claimed invention "unexpectedly" provides for superior feel at
impact via the relationship disclosed in formula (2). Appeal Br. 13.
Appellants similarly argue that formula (2) is critical. Id. at 10. However,
there is no evidence to support the naked assertions of unexpected results
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Application 15/359,343
and criticality. See generally Appeal Br. See Applied Materials, at 1297
( affirming obviousness determination where Applicant provided no evidence
of unexpected results or criticality). In short, there is no evidence as to what
a practitioner would otherwise have "expected" from the claimed variables
prior to the invention, much less how such expectations were altered by
Appellants' invention. Furthermore, there is no evidence that the results
achieved are different in kind, rather than merely in degree. "Mere lawyer's
arguments and conclusory statements in the specification, unsupported by
objective evidence, are insufficient to establish unexpected results." In re
Wood, 582 F.2d 638,642 (CCPA 1978). Similarly, "it is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice." In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants argue that formula (2) values above 0.81 are "preferable."
Appeal Br. 8. However, the mere fact that application of Appellants'
formula (2) results in improved feel and/or flight performance is not
sufficient to establish patentability. In re Huang, 100 F.3d 135, 139 (Fed.
Cir. 1996). "Optimizing" invariably yields improvement of some kind.
However, case law establishes that routine optimization is a matter of
ordinary skill, not invention. See Boesch, 617 F.2d at 276.
Appellants make much of the fact that they have reduced the
parameters of hardness and thickness and compressive deformation to a
mathematical formula. Appeal Br. 6, 8, 10, 11.
[A] person of ordinary skill in the art would not have, before
the filing of the instant application, recognized the relationship
of formula (2), and thus, the importance of mid layer thickness,
mid layer hardness, cover thickness, cover hardness and ball
compressive deformation to golf ball feel at impact.
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Id. at 10. However, this argument is not persuasive. As previously pointed
out, Isogawa already discloses cover thickness and hardness, core thickness
and hardness, and compressive deformation as result effective variables
related to shot feel. Merely reducing such known parameters to a set of
mathematic constraints in the process of routine optimization entails no
more than ordinary skill. See Applied Materials, 692 F.3d at 1297
( explaining that, generally, a claim to a product does not become nonobvious
simply because the patent specification provides a more comprehensive
explication of the known relationships between the variables and the
affected properties).
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion ofunpatentability is well-founded. We
sustain the Examiner's unpatentability rejection of claims 1, 2, and 4--12.
DECISION
The decision of the Examiner to reject claims 1, 2, and 4--12 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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